Additional Discovery Pt I

One of the intriguing aspects of inter partes review (IPR) is the availability of discovery. Discovery in the IPR context contemplates those forms of discovery familiar in the context of civil litigation, such as deposition discovery, production of documents and things, interrogatories, admissions and so forth.

Rules applicable to discovery in IPR proceedings differentiate between routine discovery (sometimes called “mandatory” discovery) and additional discovery. In general, routine discovery requires each party to serve exhibits cited in any paper, to make its declarants available for cross examination, and to serve “relevant information that is inconsistent with a position advanced by the party.” Additional discovery, on the other hand, is available only upon motion, and only upon a showing that such additional discovery is “in the interests of justice”. This article explores the various motions that have been filed for additional discovery in IPR proceedings, and the US Patent Trial and Appeal Board’s (PTAB) treatment of these motions.

Statutory background
Statutory basis for the relevant standard of “in the interest of justice” is found at 35 U.S.C. § 316, as implemented by the America Invents Act (AIA): 35 U.S.C. § 316 Conduct of inter partes review.
(a) REGULATIONS.—The Director shall prescribe regulations—
(5) setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to—
(B) what is otherwise necessary in the interest of justice; As implemented by the USPTO, the “interest of justice” standard is enacted at 37 C.F.R. § 42.51(b)
(2),which provides in relevant part as follows: 37 CFR § 42.51 Discovery.
(b)(1) Routine discovery. Except as the Board may otherwise order:
(iii) Unless previously served, a party must serve relevant information that is inconsistent with a
position advanced by the party during the proceeding concurrent with the filing of the documents or things that contains the inconsistency….
(b)(2) Additional discovery.
(i) The parties may agree to additional discovery between themselves. Where the parties fail to agree,
a party may move for additional discovery. The moving party must show that such additional discovery is in the interests of justice…”
Congressional debate for AIA suggests that because of the “interests of justice” standard, additional discovery during IPR proceedings will be granted only sparingly. During introduction of the original 2008 patent reform bill, Senator Kyl commented that the discovery standard for inter partes review “restricts additional discovery to particular limited situations, such as minor discovery that PTO finds to be routinely useful, or to discovery that is justified by the special circumstances of the case.”1 Senator Kyl further commented that “[g]iven the time deadlines imposed on these proceedings, it is anticipated
that, regardless of the standards imposed in [sections 316 and 326], PTO will be conservative in its grants of discovery.”2 The view of PTAB is that the discovery standard in AIA, as enacted in 2011, is identical to that of the original 2008 bill, and that Senator Kyl’s comments are equally applicable.
Thus, in inter partes review, discovery is limited………Request a free trial to read more.

Michael K. O’Neill
Michael is managing partner of the Orange County, California office, of Fitzpatrick, Cella, Harper & Scinto. He has extensive experience in preparation and prosecution of patent applications, complex prosecution, licensing transactions and portfolio management, and client counseling particularly in the implementation of corporate systems for invention management and strategic innovation. His technological areas focus on Internet, computer and software related inventions, networks and business methods, and also optics, semiconductors and electronic devices.